Designs - Statute Sections

Question 1

CDPA s51

Answer 1

Design documents and models

(1) It is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design.
(2) Nor is it an infringement of the copyright to issue to the public, or include in a film or communicate to the public, anything the making of which was, by virtue of subsection (1), not an infringement of that copyright.
(3) In this section—

“design” means the design of F2…the shape or configuration (whether internal or external) of the whole or part of an article, other than surface decoration; and

“design document” means any record of a design, whether in the form of a drawing, a written description, a photograph, data stored in a computer or otherwise.

Question 2

CDPA s213(1)

Question 3

CDPA s213(2)

Answer 3

In this Part “design” means the design of the shape or configuration (whether internal or external) of the whole or part of an article.

• “aspects of” removed by 2014 Intellectual Property Act

Question 4

CDPA s213(3)

Answer 4

Design right does not subsist in—

(a) a method or principle of construction,
(b) features of shape or configuration of an article which—
(i) enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function, or
(ii) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part, or
(c) surface decoration.

Question 5

CDPA s215

Answer 5

(1) The designer is the first owner of any design right in a design which is not created in the course of employment.
(2) Removed [previously gave UDR to commisioner of design)
(3) Where a design is created by an employee in the course of his employment, his employer is the first owner of any design right in the design.

Question 6

CDPA s216

Answer 6

(1) Design right expires—
(a) fifteen years from the end of the calendar year in which the design was first recorded in a design document or an article was first made to the design, whichever first occurred, or
(b) if articles made to the design are made available for sale or hire within five years from the end of that calendar year, ten years from the end of the calendar year in which that first occurred.

Question 7

CDPA s226

Answer 7

226Primary infringement of design right.

(1) The owner of design right in a design has the exclusive right to reproduce the design for commercial purposes—
(a) by making articles to that design, or
(b) by making a design document recording the design for the purpose of enabling such articles to be made.
(2) Reproduction of a design by making articles to the design means copying the design so as to produce articles exactly or substantially to that design, and references in this Part to making articles to a design shall be construed accordingly.

Question 8

CDPA s236

Answer 8

Where copyright subsists in a work which consists of or includes a design in which design right subsists, it is not an infringement of design right in the design to do anything which is an infringement of the copyright in that work.

Question 9

CDPA s237

Answer 9

Licences available in last five years of design right.

(1) Any person is entitled as of right to a licence to do in the last five years of the design right term anything which would otherwise infringe the design right.
(2) The terms of the licence shall, in default of agreement, be settled by the comptroller.

Question 10

Designs Directive Recital 13

Answer 10

Whereas the assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design;

Question 11

Designs Directive Art. 3(2)

Answer 11

A design shall be protected by a design right to the extent that it is new and has individual character.

Question 12

Designs Directive Article 3(3) & 3(4)

Answer 12

3. A design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character:
   (a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter, and
   (b) to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character.
4. ‘Normal use’ within the meaning of paragraph (3)(a) shall mean use by the end user, excluding maintenance, servicing or repair work.

Question 13

Designs Directive Article 4

Answer 13

A design shall be considered new if no identical design has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority. Designs shall be deemed to be identical if their features differ only in immaterial details.

Question 14

Designs Directive Article 5

Answer 14

1. A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority.
2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.

Question 15

Design Directive Article 6(1)

Answer 15

For the purposes of applying article 4 and 5, a design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community, before the date of filing of the application for registration or, if priority is claimed, the date of priority. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.

Question 16

Designs Directive Article 6(2)

Answer 16

A disclosure shall not be taken into consideration for the purpose of applying Articles 4 and 5 if a design for which protection is claimed under a registered design right of a Member State has been made available to the public:

(a) by the designer, his successor in title, or a third person as a result of information provided or action taken by the designer, or his successor in title; and
(b) during the 12-month period preceding the date of filing of the application or, if priority is claimed, the date of priority.

Question 17

Designs Directive Article 7(1)

Answer 17

A design right shall not subsist in features of appearance of a product which are solely dictated by its technical function.

Question 18

Designs Directive Art. 7(2)

Answer 18

A design right shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function.

Question 19

Designs Directive Art. 7(3)

Answer 19

Despite paragraph 2, design right does subsist in a design serving the purpose of allowing multiple assembly or connection of mutually interchangeable products within a modular system.

Question 20

Designs Directive Article 8

Answer 20

A design right shall not subsist in a design which is contrary to public policy or to accepted principles of morality.

Question 21

Designs Directive Article 9

Answer 21

1. The scope of the protection conferred by a design right shall include any design which does not produce on the informed user a different overall impression.
2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.

Question 22

Designs Directive Article 10

Answer 22

Upon registration, a design which meets the requirements of Article 3(2) shall be protected by a design right for one or more periods of five years from the date of filing of the application. The right holder may have the term of protection renewed for one or more periods of five years each, up to a total term of 25 years from the date of filing.

Question 23

Designs Directive Article 12(1)

Answer 23

The registration of a design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.

Question 24

Designs Directive Article 13

Answer 24

1. The rights conferred by a design right upon registration shall not be exercised in respect of:
   (a) acts done privately and for non-commercial purposes;
   (b) acts done for experimental purposes;
   (c) acts of reproduction for the purposes of making citations or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source.
2. Aircraft/Ship Exceptions

Question 25

Correspondence between sections of Designs Directive and Design Regulations

Answer 25

• (Article Title): Directive Article -> Regulation Article
• (Requirements for protection): 3 -> 4
• (Novelty): 4 -> 5
• (Individual Character): 5 -> 6
• (Disclosure): 6 -> 7
• (Designs dictated by their technical function and designs of interconnections): 7 -> 8
• (Designs contrary to public policy or morality): 8 -> 9
• (Scope of production): 9 -> 10
• (Term of protection): 10 -> 12
• (Rights conferred by design): 12 -> 19
• (Limitation of rights conferred by design): 13 -> 20

Question 26

Community Design Regulation Art. 110

Answer 26

1. Until such time as amendments to this Regulation enter into force on a proposal from the Commission on this subject, protection as a Community design shall not exist for a design which constitutes a component part of a complex product used within the meaning of Article 19(1) for the purpose of the repair of that complex product so as to restore its original appearance.

Question 27

RDA 1949 S7A(5)

Answer 27

The right in a registered design of a component part which may be used for the purpose of the repair of a complex product so as to restore its original appearance is not infringed by the use for that purpose of any design protected by the registration.

Question 28

Registered Designs Act 1949 S7B

Answer 28

(1) A person who, before the application date, used a registered design in good faith or made serious and effective preparations to do so may continue to use the design for the purposes for which, before that date, the person had used it or made the preparations to use it.

…

(3) Subsection (1) does not apply if the design which the person used, or made preparations to use, was copied from the design which was subsequently registered.
(4) The right conferred on a person by subsection (1) does not include a right to licence another person to use the design.
(5) Nor may the person on whom the right under subsection (1) is conferred assign the right, or transmit it on death (or in the case of a body corporate on its dissolution), unless—
(a) the design was used, or the preparations for its use were made, in the course of a business, and
(b) the right is assigned or transmitted with the part of the business in which the design was used or the preparations for its use were made.

Question 29

RDA 1949 s7A(5)

Answer 29

The right in a registered design of a component part which may be used for the purpose of the repair of a complex product so as to restore its original appearance is not infringed by the use for that purpose of any design protected by the registration.